Savannah River Nuclear Solutions, LLCDownload PDFPatent Trials and Appeals BoardNov 5, 202014661624 - (D) (P.T.A.B. Nov. 5, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/661,624 03/18/2015 David M. Immel SRNS-77 (SRS-14-019B) 1034 22827 7590 11/05/2020 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER RIDDICK, BLAKE CUTLER ART UNIT PAPER NUMBER 2884 NOTIFICATION DATE DELIVERY MODE 11/05/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USDOCKETING@DORITY-MANNING.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID M. IMMEL, JOHN T. BOBBITT III, and JEAN R. PLUMMER ____________ Appeal 2020-000927 Application 14/661,624 Technology Center 2800 ____________ Before ADRIENE LEPIANE HANLON, MONTÉ T. SQUIRE, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1 and 5–10.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Savannah River Nuclear Solutions, LLC as the real party in interest. Appeal Brief filed June 13, 2019 (“Appeal Br.”) at 3. 2 Final Office Action entered December 13, 2018 (“Final Act.”) at 1. Appeal 2020-000927 Application 14/661,624 2 CLAIMED SUBJECT MATTER Appellant claims a calibration system for an image plate used to detect high-energy particles produced by a radioisotope. Appeal Br. 5–6. Claim 1, the sole pending independent claim, illustrates the subject matter on appeal, and reads as follows: 1. A calibration system for an image plate used to detect high-energy particles produced by a radioisotope, wherein the high-energy particles comprise at least one of alpha particles, beta particles, neutrons, x-rays, gamma rays, or ultraviolet rays, comprising: a casing, the casing defining an access port and a slot extending from the access port and extending internally within the casing, the slot defining a first surface and a second surface with a space therebetween, the casing comprising a detent, a spring, or a press fitting that extends into the slot; an image plate holder configured for removable insertion within the slot such that a first side of the image plate holder is adjacent to the first surface of the slot and a second opposite side of the image plate holder is adjacent to the second surface of the slot, the image plate holder defining an opening for exposing at least a portion of an image plate retained therein, the image plate holder defining a mating surface for mating with the detent, spring, or press fitting upon insertion of the image plate holder into the slot, the image plate holder further comprising a handle operably connected thereto, wherein the handle extends at least partially outside of the access port upon insertion of the image plate holder into the slot; and a calibration source that generates energy inside said casing, the calibration source being located within the casing such that the energy is directed to the opening of the image plate holder upon insertion of the image plate holder into the slot with the mating surface mated with the detent, spring, or press fitting. Appeal Br. 24 (Claims Appendix) (emphasis added). Appeal 2020-000927 Application 14/661,624 3 REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered September 19, 2019 (“Ans.”): I. Claims 1 and 10 under 35 U.S.C. § 103 as unpatentable over Mick3 in view of Coleman,4 Allison,5 and Ohgoda;6 II. Claim 5 under 35 U.S.C. § 103 as unpatentable over Mick in view of Coleman, Allison, Ohgoda, and Trzcinski;7 III. Claims 6 and 7 under 35 U.S.C. § 103 as unpatentable over Mick in view of Coleman, Allison, Ohgoda, and Tom;8 IV. Claim 8 under 35 U.S.C. § 103 as unpatentable over Mick in view of Coleman, Allison, Ohgoda, and Arakawa;9 V. Claim 9 under 35 U.S.C. § 103 as unpatentable over Mick in view of Coleman, Allison, Ohgoda, and Steffen.10 FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we reverse the Examiner’s rejections of claims 1 and 5–10 under 35 U.S.C. § 103 for the reasons set forth in the Appeal Brief and below. Claim 1 requires the recited calibration system for an image plate to comprise, in part, a casing defining an access port and a slot that extends 3 US 5,561,698; issued October 1, 1996. 4 US 2012/0112099 A1; published May 10, 2012. 5 US 3,226,999; issued January 4, 1966. 6 US 4,931,641; issued June 5, 1990. 7 US 7,057,200 B2; issued June 6, 2006. 8 US 2007/0023710 A1; published February 1, 2007. 9 US 5,065,021; issued November 12, 1991. 10 US 5,440,146; issued August 8, 1995. Appeal 2020-000927 Application 14/661,624 4 internally within the casing, and an image plate holder configured for removable insertion within the slot. Claim 1 requires the image plate holder to define an opening for exposing at least a portion of an image plate retained in the image plate holder. The Examiner finds that Mick discloses a film holding device comprising plates 10, 11 (a casing) separated by an opening (access port and slot) including studs 13 (alignment means), and an “image film holder (rectangular film pack) . . . configured for exposing at least a portion of an image film retained therein.” Final Act. 4–5 (citing Mick col. 1, ll. 7–10; col. 1, l. 51–col. 2, l. 2; col. 2, ll. 34–45; Figs. 1 and 2). The Examiner finds that “Mick does not expressly disclose the image pack is an image plate, such that the image film holder is an image plate holder, the image plate holder defining an opening for exposing at least a portion of the image plate retained therein.” Final Act. 6 (emphasis omitted). The Examiner finds, however, that Coleman discloses a phosphorous storage plate (image plate) “and an opening 150 for exposing at least a portion of the image plate.” Final Act. 6. (citing Coleman ¶¶ 4, 60). In view of these disclosures in Coleman, the Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the invention of Mick with the teachings of Coleman so that . . . the image pack is an image plate, such that the image film holder is an image plate holder, the image plate holder defining an opening for exposing at least a portion of the image plate retained therein.” Final Act. 6 (emphasis omitted). The Examiner finds that “[o]ne would have been motivated to do so to gain advantages recited in Coleman of using a Appeal 2020-000927 Application 14/661,624 5 high sensitivity image plate,” and “being able to achieve a desired field of view.” Final Act. 7. (emphasis omitted) (citing Coleman ¶¶ 4, 60). On the record before us, however, for reasons express by Appellant and discussed below, the Examiner does not establish that the relied-upon disclosures of Mick and Coleman would have suggested a calibration system for an image plate that includes an image plate holder defining an opening for exposing at least a portion of an image plate retained in the image plate holder, as required by claim 1. Mick discloses a film holding device used to calibrate the positioning accuracy of a movable radiation source of a medical device that provides high doses of radiation to tumors. Mick col. 1, ll. 13–26, 50–52. Mick discloses that the film holding device comprises flat planar plates 10, 11, aligning studs 13, and locking screws 14. Mick col. 2, ll. 32–45; Figs 1 and 2. Mick discloses that plates 10, 11 are “generally rectangular in shape so as to hold a rectangular film pack.” Mick col. 2, ll. 35–37. Mick discloses that suitable film packs include a 10x12 inch rectangular radiographic film wrapped in paper, which “is common in the industry and usually is designed to have a rectangular shape with side edges forming its perimeter which fits snugly inside the aligning studs 13.” Mick col. 2, ll. 37–42. Mick discloses that aligning studs 13 “thus position the film pack and hold[] it steady while locking screws 14 are tightened by hand to clamp the film pack immobile between plates 10 and 11.” Mick col. 2, ll. 42–45. Mick thus discloses using aligning studs 13 to position a rectangular radiographic film wrapped in paper, which Mick refers to as a “film pack,” snugly between flat planar plates 10, 11, and tightening locking screws 14 to immobilize the radiographic film between plates 10, 11. Mick col. 2, ll. 42– Appeal 2020-000927 Application 14/661,624 6 45. As discussed above, the Examiner finds that Mick discloses an “image film holder (rectangular film pack) . . . configured for exposing at least a portion of an image film retained therein.” Final Act. 5. Contrary to the Examiner’s findings, however, Mick’s device does not include an image film holder and an image film retained therein. Rather, Mick’s device directly clamps a radiographic film between plates 10, 11 (a casing) without retaining the film in a film holder. Coleman discloses a radiation detector apparatus for assessing areas potentially contaminated by radioactive materials that comprises a housing defining a plurality of faces that each include a receptacle for retaining a radiation detector, and a collimator positioned opposite each receptacle. Coleman ¶¶ 4, 5, 17, 18. Coleman discloses that each radiation detector includes a plurality of film layers positioned between opposing layers of radiation attenuation materials that “provide[] for a controlled reduction of radiation intensity that passes through the detector.” Coleman ¶¶ 12, 45; Fig. 1. Coleman discloses that suitable films for use in the radiation detector include phosphorous storage plates (PSP). Coleman ¶ 46. Coleman discloses that each collimator comprises an opening, and the radiation detector receives radiation that passes through the opening in the collimator. Coleman ¶ 19. Coleman discloses that the opening within each collimator provides a 96 degree field of view, and explains that when a radiation detector and paired collimator are included “on each of six cube faces [of a radiation detection apparatus], the 96 degree field of view provides sufficient overlap such that a full 360° degree coverage is provided.” Coleman ¶¶ 58, 60. Appeal 2020-000927 Application 14/661,624 7 Although, as discussed above, the Examiner asserts in the Final Action that one of ordinary skill in the art would have used a phosphorous storage plate as disclosed in Coleman instead of the radiographic film (film pack) disclosed in Mick in Mick’s film holding device to “be[] able to achieve a desired field of view,” Coleman discloses that a desired field of view can be achieved by using multiple radiation detectors and collimators that are each disposed on a different face of Coleman’s radiation detector apparatus. The Examiner does not identify any disclosure in Coleman indicating that the phosphorous storage plates included in Coleman’s radiation detector themselves provide a desired field of view. And although the Examiner further asserts in the Answer that substituting a phosphorous storage plate as disclosed in Coleman for Mick’s radiographic film (film pack) would constitute “simple substitution of one means for radiation detection . . . for another means for radiation detection,” the Examiner does not provide any evidence establishing that a phosphorous storage plate as disclosed in Coleman and a radiographic film as disclosed in Mick are known equivalents for the particular purpose for which Mick’s radiographic film is used. Ans. 7–8. As discussed above, Coleman discloses a radiation detector for assessing areas potentially contaminated by radioactive materials that includes a plurality of phosphorous storage plates positioned between opposing layers of radiation attenuation materials, whereas Mick discloses using a single rectangular radiographic film to calibrate the positioning accuracy of a movable radiation source in a medical device. The Examiner does not address these structural and functional differences between Coleman’s phosphorous storage plate and Mick’s radiographic film, and does not provide evidence establishing that, despite Appeal 2020-000927 Application 14/661,624 8 those differences, Coleman’s phosphorous storage plate is a known equivalent used for the same purpose as Mick’s radiographic film (film pack). See In re Christensen, 82 F.2d 715, 716 (CCPA 1936); see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950) (“In determining equivalents, things equal to the same thing may not be equal to each other . . . . Consideration must be given to the purpose for which an ingredient is used in a patent . . . and the function which it is intended to perform.”); see also MPEP § 2144.06(II) (“In order to rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”) (citing In re Ruff, 256 F.2d 590 (CCPA 1958)). On the record before us, therefore, the Examiner does not provide sound technical reasoning supported by objective evidence establishing that one of ordinary skill in the art would have had a reason to substitute a phosphorous storage plate as disclosed in Coleman for Mick’s radiographic film (film pack), as the Examiner proposes. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t [is] important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); In re Van Os, 844 F.3d 1359, 1361–62 (Fed. Cir. 2017) (“a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine” because “[t]his type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason Appeal 2020-000927 Application 14/661,624 9 why a skilled artisan would have combined the elements in the manner claimed.”) (emphasis omitted) (citing KSR, 550 U.S. at 418, 421). Moreover, as Appellant argues (Appeal Br. 17), even if one of ordinary skill in the art would have made the Examiner’s proposed substitution, Mick’s film holding device as so modified still would not include an image plate holder that defines an opening for exposing at least a portion of an image plate retained in the image plate holder. As discussed above, Mick’s device does not include an image film holder in which an image film is retained, and instead Mick’s device directly clamps a radiographic film between plates 10, 11 (a casing) without retaining the film in a film holder. Although the Examiner refers to opening 150 disclosed in Coleman (Final Act. 6), opening 150 is formed in a collimator, rather than in an image plate holder. Coleman ¶ 60; Fig. 3. The Examiner does not explain how Coleman’s disclosure of a collimator opening would have suggested forming an opening in an image plate holder and incorporating such an image plate holder in Mick’s device. On the record before us, therefore, the Examiner does not establish that a combination of the relied-upon disclosures of Mick and Coleman would have suggested a device comprising a casing defining an access port and a slot, an image plate holder configured for removable insertion within the slot, where the image plate holder defines an opening for exposing at least a portion of an image plate retained in the image plate holder, as required by claim 1. We, accordingly, do not sustain the Examiner’s rejection of claim 1, and rejections of claims 5–10, which each depend from claim 1, under 35 U.S.C. § 103. Appeal 2020-000927 Application 14/661,624 10 CONCLUSION Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 10 103 Mick, Coleman, Allison, Ohgoda 1, 10 5 103 Mick, Coleman, Allison, Ohgoda, Trzcinski 5 6, 7 103 Mick, Coleman, Allison, Ohgoda, Tom 6, 7 8 103 Mick, Coleman, Allison, Ohgoda, Arakawa 8 9 103 Mick, Coleman, Allison, Ohgoda, Steffen 9 Overall Outcome 1, 5–10 REVERSED Copy with citationCopy as parenthetical citation